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Strategies to Minimize Prosecution Time and Increase Patent Term – Part 2

This is the second of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office. As in Part I, several strategies to minimize the prosecution time of an application to achieve the earliest possible issue date are presented.

Provisional applications are NEVER examined; only nonprovisional applications are examined. And a utility application that claims the benefit of a provisional filing date is examined according to its own actual filing date, not the provisional filing date. As a result, the period from a provisional application filing date until the filing of a corresponding nonprovisional application delays the start of examination. Only the filing of a nonprovisional application places the application into line for examination.

This is not to say that provisional applications should always be avoided. To the contrary, provisional application can be both useful and necessary because a provisional filing date closes off later prior art from being cited against the application, and may be necessitated by business considerations (i.e., the ability to say “patent pending”), or to avoid a bar to patentability under 35 U.S.C. § 102. Thus, when considerations that outweigh speedy examination are present, a provisional application should be considered. Nonetheless, when possible, it is generally best to avoid filing a provisional application. And, when a provisional application is filed, it is generally best to start the conversion process as soon as possible.

Prosecute Applications Efficiently

Responding to all Office Actions as early as possible (hopefully within the typical three month response deadline set by most Office Actions) tends to speed up patent prosecution. To be sure, responding early to an Office Action yields a benefit measurable in days. This benefit, however, is amplified by routinely responding early to Office Actions. Indeed, routinely responding sooner than required can have a significant cumulative effect, especially when one considers those applications that cause several Office Actions to be generated.

Maintaining efficient communication with the examiner by interview also tends to speed up patent prosecution. Interviews help applicants better understand how an examiner is interpreting cited art, the basis for rejections, and how an examiner will respond to potential claim amendments, often without many of the estopple effects of paper prosecution. In these ways, interviews may greatly advance prosecution by at the very least making responses to Office Actions more effective.

Filing responses by Express Mail or Facsimile can also reduce prosecution time. Even though responses filed by first class mail are considered to have been filed on the day they are deposited in the mail, they must still be delivered to the PTO before they can be processed and may be lost. In contrast, papers filed electronically or by facsimile are virtually immediately received. In sum, filing electronically or by facsimile is safer and faster.

Take Advantage of Formal Examiner Amendments

MPEP § 1302.04 specifically limits changes to an image file wrapper (IFW) application to either: (1) a formal examiner’s amendment; or (2) an amendment made by the applicant. Also, this section authorizes the use of a formal examiner’s amendment to informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. When faced with a the necessity for modest formal changes, a formal examiner amendment can avoid at least the time the PTO will take to process a response, even if that response is filed electronically.

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Christopher Paul Mitchell (Chris) is a Washington, DC-based patent attorney providing legal services to clients throughout the world. Chris focuses his practice in all areas of intellectual property law, with an emphasis on client counseling, intellectual property procurement, licensing, and litigation support. His patent prosecution experience is primarily in business methods, computer software, and computer hardware.